ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Taylor Wessing Limited Liability Partnership v. Name Redacted Case No. D2023-0741 1. The Parties The Complainant is Taylor Wessing Limited Liability Partnership, United Kingdom ("UK"), represented internally. The Respondent is Name Redacted1. 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2023. On February 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 23, 2023. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent's name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2023. The Center appointed Mihaela Maravela as the sole panelist in this matter on March 23, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background According to information in the Complaint, the Complainant is a global law firm, that operates in 17 locations, with 1,100 lawyers. The Complainant has been ranked for many years in Chambers Global, Legal 500 UK and Legal 500 Deutschland. Its combined global revenues in 2022 were in excess of GBP 400 million. The Complainant is the exclusive owner of a number of registered trademarks consisting of TAYLOR WESSING including the United States of America trademark registration No. 2941089 registered on April 19, 2005 and the European Union trademark registration No. 002727519 registered as of March 31, 2004. The Complainant uses the domain name for its official website. The disputed domain name was registered on February 16, 2023, and it does not resolve to an active website. According to the evidence provided by the Complainant, the disputed domain name has been used as an email address pretending to be one of the partners of the Complainant. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to its distinctive and famous trademark TAYLOR WESSING, which is entirely included in the disputed domain name, save for the additional letter 'i' being inserted in the word 'wessing'. With respect to the second element, the Complainant argues that the disputed domain name was registered many years after the establishment of the Complainant's well-known TAYLOR WESSING trademark, and it does not resolve to a valid website. The Complainant submits that the disputed domain name has been used on at least one occasion in an unlawful, fraudulent email scam, where the Respondent claimed to represent the Complainant in relation to "chasing a court order judgment" issued to the company. The email also claimed that the sender had been advised to contact the company to get the matter "settled as soon as possible". The Respondent used an email address as well as registrant data impersonating a partner of the Complainant in the UK. The Complainant submits it has no connection with the Respondent, with the disputed domain name or the email address used in the fraudulent scheme using the disputed domain name. As regards the third element, the Complainant submits that the disputed domain name was registered or acquired primarily for the purpose of using it to target a third party by way of serious, unlawful and fraudulent email scams to elicit the third party into transferring funds. By using the disputed domain name, the Respondent is intentionally attempting to opportunistically attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's famous TAYLOR WESSING trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. page 3 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Preliminary matters Given the unrebutted evidence in the case file, the Panel considers that the Respondent, whose identity was disclosed by the Registrar in response to the Center's request for registrar verification, was most likely victim of identity theft and had no knowledge of the registration and use of the disputed domain name. For this reason, the Panel finds appropriate in this proceeding to redact the actual name of the Respondent to protect its identity. See Accenture Global Services Limited v. Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2013-2099; Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K.A.], WIPO Case No. D2016-1625. Substantive matters Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of its rights in the TAYLOR WESSING trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name". Here the disputed domain name consists of the obvious misspelling of the trademark TAYLOR WESSING of the Complainant. This misspelling in the disputed domain name, also referred to as typosquatting, is insufficient to avoid a finding of confusing similarity (see WIPO Overview 3.0, section 1.9). It is well accepted by UDRP panels that a generic Top-Level Domain ("gTLD"), such as ".com", is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. page 4 As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant has established a prima facie case that it holds rights over the trademark TAYLOR WESSING and claims that the Respondent was not authorized by the Complainant to register the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Also, there is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain name. The use of the domain name for illegal activity, such as phishing and impersonation (as in the present case), does not confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0). With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. According to the unrebutted assertions of the Complainant, its TAYLOR WESSING trademark was widely used well before the registration of the disputed domain name. The disputed domain name is a typosquatted version of the Complainant's trademark. The email sent from the disputed domain name uses the name of one of the partners of the Complainant. Under these circumstances, it is most likely that the Respondent was aware of the Complainant's trademark at the time of registration of the disputed domain name and sought to take advantage of the reputation of the TAYLOR WESSING trademark. As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name confusingly similar to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. Moreover, the Complainant argues that the Respondent is using the disputed domain name for phishing emails. The evidence put forward by the Complainant in this respect has not been rebutted by the Respondent. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant's actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0). In the Panel's view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled. page 5 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: April 4, 2023
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